The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Sabuj Sirajul Islam, United Arab Emirates.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on September 27, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is part of the group of companies affiliated to Philip Morris International, Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. In 2014, PMI launched its IQOS System that comprises a device that heats specially designed tobacco sticks, under the brand name HEETS, sufficiently to generate a flavourful nicotine-containing aerosol without burning the tobacco. The IQOS System is now available in key cities in around 66 markets around the world and approximately 19.1 million consumers worldwide now use the IQOS System.
The IQOS System has been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant is the proprietor of a number of registered trademarks in respect of IQOS and HEETS including United Arab Emirates trademark number 211139 IQOS registered on March 16, 2016, and United Arab Emirates trademark number 256864 HEETS registered on December 25, 2017.
The Domain Name was registered on December 21, 2020. It resolves to an English language website (the “Website”) comprising an online shop purporting to offer for sale the Complainant’s IQOS System, including HEETS products, at significantly discounted prices listed in United Arab Emirates dirham currency. The Website prominently uses the IQOS and HEETS trademarks and copies of a number of the Complainant’s official product images. A copyright notice at the bottom of the Website claims copyright in the material on the Website. The Website does not show any details regarding the provider of the Website or acknowledge the Complainant as the brand owner of the IQOS System. It promises delivery of products in Dubai within 12 hours.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its IQOS and HEETS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in the IQOS and HEETS trademarks (the “Marks”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Marks over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of both Marks, together with the letters “dxb”, the airport code for Dubai International Airport. In the view of the Panel, the addition of this reference does not prevent a finding of confusing similarity between the Domain Name and each of the Marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent has used the Domain Name for a website featuring the IQOS and HEETS word marks purporting to offer IQOS products without the authority of the Complainant. Furthermore, the Website feature unauthorized copies of images of the Complainant’s products. The Respondent is not an authorized sales agent of the Complainant.
Save for the significantly discounted prices purportedly offered on the Website, there is no evidence, however, that the Respondent is offering any products other than genuine products of the Complainant.
Although there has been no Response by the Respondent, the Panel has in mind that previous UDRP panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. The Oki Data1 test as set out in section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) outlines the following cumulative requirements for such a finding:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site only to sell the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
As the Panel indicates above, the first two requirements appear in this case to be met. As far as the fourth requirement is concerned, there is no evidence from the Complainant that the Respondent has attempted to corner the market in domain names reflecting the Mark.
Turning to the third requirement, the Website gives no information whatsoever as to the identity of the operator of the Website or seller of the products on offer. There is no “About Us” page or any terms and conditions as to sales of the products. The Website therefore fails to make clear in an accurate and prominent way, or at all, the Respondent’s relationship (or absence of relationship) with the Complainant.
In the Panel’s view, the use of the Complainant’s Marks and images falsely represents to Internet users that the Respondent is authorized by the Complainant to sell the products.
Accordingly, the Panel does not consider that the Respondent has met the Oki Data test, and finds that there is a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the evidence available to the Panel. In the circumstances, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithSince the Respondent has used the Domain Name for a website prominently featuring the Complainant’s Marks, and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. In light of the Respondent’s use of the Marks and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the Domain Name with a view to confusing Internet users into believing that the Website was associated with or authorised by the Complainant.
In the Panel’s view, the use of the Domain Name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ian Lowe
Sole Panelist
Date: October 11, 2021
1 Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903.